The Leahy-Smith America Invents Act (AIA), signed into law on September 16, 2011, made significant changes to the United States patent system. Two such changes were the introduction of a new post-grant review procedure called the Inter Partes Review (IPR) and, relatedly, the creation of the Patent Trial and Appeal Board (PTAB) to administer IPR proceedings.

IPR proceedings provide a relatively inexpensive and efficient way for a party to challenge the patentability of an issued patent based on prior art patents and printed publications under 35 U.S.C. §§ 102 and 103. The first petition for IPR was filed on September 16, 2012, the first day the proceedings were available. Under the AIA, the PTAB is statutorily required to complete an IPR proceeding and issue a final decision within eighteen months of a petition being filed, or, more specifically, within one year after the date on which the PTAB institutes review.1

The PTAB institutes trial on petitions for IPR at a very high rate. There have been 698 IPR institution decisions with trial being instituted on 542 petitions, roughly 78%.2 Of these 542 instituted trials, as of the end of May 2014, there have been 78 final decisions by the PTAB.3 In these 78 IPR proceedings with final decisions, there were 1,242 claims challenged by the petitioners with IPR proceedings instituted on 1,107 of the challenged claims. This means that 89% of all challenged claims had IPR proceedings instituted. Of those 1,107 claims for which IPR proceedings were instituted, 876 claims were cancelled by the PTAB while 231 claims survived (were not shown to be unpatentable). Thus, based on the first twenty months of IPR proceedings, once the PTAB institutes IPR proceedings, there is a 79% chance that the claim will be found unpatentable.4

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Looking more specifically at these 78 final IPR decisions reveals more bad news for patent owners. This small sample size shows that it is highly likely that the PTAB will institute IPR proceedings on each claim that is challenged by a petitioner. This happens in roughly 79% of all proceedings with final decisions. Even worse for patent owners is that 75.6% of the time, the PTAB cancels all claims upon which IPR proceedings have been instituted (this occurred in 59 of the 78 proceedings). In only 19 out of 78 proceedings did the PTAB find that the petitioner did not carry its burden to show that all of the instituted claims were unpatentable.

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While the numbers after the first 78 final decisions are, for the most part, in line with the general perception that an IPR is a death sentence for a patent, the numbers recently appear to be trending more in favor of patent owners. This seeming trend, however, may be misleading due to several IPR proceedings between two parties, Corning Incorporated and DSM IP Assets B.V, which have recent final decisions. Corning Incorporated filed many different IPR petitions, ten of which were instituted by the PTAB and reached a final decision. Of Corning’s ten IPR proceedings with final decisions, eight of those proceedings found that the petitioner did not carry its burden to show that all of the challenged claims were unpatentable. This accounts for half of all such final decisions in which the PTAB found that the petitioner failed to carry its burden. One problem that the petitioner in Corning Incorporated v. DSM IP Assets B.V. may have faced was its reliance on an inherency argument to show that a claim limitation was present in the prior art.6

So far, the overall aggregated data appears to indicate that despite the recent trend in favor of patent owners, IPR proceedings remain a substantial hurdle for any patent owner attempting to assert its patent.

Michelle Taylor